Gene Probes as Unpatentable Printed Matter

Abstract

In this Article, I argue that the most problematic kind of gene patents - those claiming short DNA molecules used to probe for longer gene sequences - should be held invalid as directed to unpatentable printed matter. This argument, which emerges from recent developments in biotechnology and information technology, is grounded in the printed matter doctrine’s structural role of obviating patentability inquiries directed to inapposite information-management considerations. Where the inventive contribution in a claimed gene probe subsists solely in stored sequence information, these inapposite considerations lead the novelty and nonobviousness analyses to anomalous results that the printed matter doctrine was designed to avoid. I conclude that the doctrine should apply to all gene probes capable of being synthesized by known general methods.

Keywords: Biotechnology, Gene Patents, DNA, Printed Matter Doctrine, Patentable Subject Matter, Myriad Genetics